Looking for Advice and Opinions re: Imminent Expert Decision

[Hennessy]

Hello everyone, found this forum last week while looking for info. I never realize d just how interesting domains could be!

Anyhow, as of today a DRS mediation has been closed and it's almost a certainty that the complainant will request an Expert decision.

Basically, I was trading for a few months with a supplier that produces one product which they have TM'd and have the .com domain. I noticed that the .co.uk domain was available so purchased it and began to run an ecommerce site selling amongst others their product. After the initial email from them stating that I was infringing their TM , passing off, etc. I removed their product within 24hrs. It was clear to me that they were pissed off that they hadnt taken the .co.uk at the same time as getting the .com. There followed several emails complaining about this or that, and at all times I either removed or changed the content. I did however place a link to my other site where the same or similar items could be purchased.

Their solicitors contacted me with their concerns and that they wanted me to hand over the .co.uk domain to their client. A couple of letters later they gave up and went to Nominet DRS. I found the mediator very helpful, however today the complainant has decided to cease the mediation and go for the Expert.

Ok, so far so good. As far as I'm concerned my site now could not be perceived as Abusive as I have said I have made necessary changes. I have read here that one can make a Non Standard Submission to the expert when the time comes, which I intend to do, as their reply to my response contained at least errors at worst lies. Would the fact that i have changed the sites content be a plus for my cause or will the expert only make a decision based mainly on the complaint, my response and their reply?

Your thoughts would be appreciated.

 

[Hennessy]

52 views so far and no replies.

Is this a taboo subject?

 

[bb99]

Hi

Welcome to the forum! This place is full of morons who think they're Perry Mason when it comes to DRSs. I'm one of them

Making changes to your site is a double edged sword in my view - on the one hand you're showing good faith in doing so, trying to avoid any trouble and being co-operative (within reason). On the other hand, by making the changes you could be admitting that changes needed to be made and that without those changes there may be confusion or harm done to the other party.

In other words: You're danmed if you do and damned if you don't!

Moving on to the non-standard submission... If you think the other party has lied or misled the expert then yes it is probably worth making a non-standard submission to respond to their response to your response. But I would say that it's not worth getting into a tit for tat argument on matters not strictly related to the DRS. Easier said than done when you're directly involved and can't necessarily see the wood from the trees.

I guess for the most part the writing is on the wall for your DRS as both the complaint and the response are now done... Good luck with it!

 

[afx]

Is it a made up word or generic ?

Do they have a UK trademark or a CTM (european community trademark) for use in the UK for the exact term minus the .co.uk ?

If it's a made up word and they have either of the above, then I'd say it's fairly likely you're screwed and will lose the name at a decison stage based on the info you've provided and your use of the name.

Assuming the worst of the above is true, if I were you and had any other decent names to protect and are new to this game and planning to acquire more names, then don't get a decison against you and just hand the name back stating an expert decison isn't necessary; chalk it up and move on.

Just my two cents from another DRS Perry Mason ;-)

 

[Hennessy]

Is it a made up word or generic ?

Do they have a UK trademark or a CTM (european community trademark) for use in the UK for the exact term minus the .co.uk ?

If it's a made up word and they have either of the above, then I'd say it's fairly likely you're screwed and will lose the name at a decison stage based on the info you've provided and your use of the name.

Assuming the worst of the above is true, if I were you and had any other decent names to protect and are new to this game and planning to acquire more names, then don't get a decison against you and just hand the name back stating an expert decison isn't necessary; chalk it up and move on.

Just my two cents from another DRS Perry Mason ;-)

Its a made up word, but the TM was only granted less than 2 years ago and a google search only throws up 7k results. My argument is that if the .co.uk was so important to them , then why didnt they reg the .co.uk at the same time. Oh, and did I mention I also have the .eu and .tel ! and the .co.uk in its plural form,with an s on the end.

 

[accelerator]

PM me the name if you want my opinion.

Rgds

 

[Hennessy]

PM me the name if you want my opinion.

Rgds

Thanks for that, although you will appreciate it if I remain cautious at this stage, especially as a newbie.

The fact is, that I never had any intention of "passing off" etc, I liked the name , it was available and I took it. Yes, I accept that I un knowingly "abused" the use of it and have made amendments as and when pointed out to me. I don't see why I should be penalized for not knowing the full "letter of the law" so to speak.

 

[accelerator]

OK, please answer:

- Had they registered a UK Trademark before you registered the .co.uk name?

- Could the words in your name be anyway described as generic, i.e. common words or phrases?

- Does their trademark text exactly match your domain name?

Rgds

 

[afx]

I can't square your last post "you have / had no intention of passing off" with your opener:

"Basically, I was trading for a few months with a supplier that produces one product which they have TM'd and have the .com domain. I noticed that the .co.uk domain was available so purchased it and began to run an ecommerce site selling amongst others their product."

 

[Hennessy]

OK, please answer:

- Had they registered a UK Trademark before you registered the .co.uk name?

YES

- Could the words in your name be anyway described as generic, i.e. common words or phrases? NO

- Does their trademark text exactly match your domain name? with the exception of .co.uk , YES

Rgds

...........................

 

[Hennessy]

I can't square your last post "you have / had no intention of passing off" with your opener:

"Basically, I was trading for a few months with a supplier that produces one product which they have TM'd and have the .com domain. I noticed that the .co.uk domain was available so purchased it and began to run an ecommerce site selling amongst others their product."

Well , I wanted to get the site up and running so put most of my products including theirs on the site. They became aware of this within a week or so, contacted me and I removed their product.

 

[accelerator]

OK, from what little I have to go on it sounds like you are in a very weak position.

If they have taken out a UK trademark, on words which are non-generic, before you regged the .co.uk, the only reason why you would have regged that domain is because you were aware of this name because of their brand existence, i.e. their intellectual property, which they had registered with a UK trademark, the right to that intellectual property under UK law.

Although I have never been involved in a DRS case, my general understanding would tell me you have very little chance of winning, and they would also be entitled to pursue damages against you if they were that way inclined.

Unless there are any extenuating circumstances, I would say it is extremely likely that you will lose this case.

Sorry to be the bearer of bad news.

Rgds

 

[pendragon]

It seems to me that you registered the name with deliberate intent, be that to sell their product or a competitiors. The fact that you used the co.uk can be constrewed as passing off, esp. as you have prior knowledge of the content of the com.

The odds dont look favourable for you inho.

I'd get in touch with them and send them a 'without prejudice' letter, accepting no liability or acceptance of their claims and offer to sell the name for a nominal amoount say £200 to cover your admin expenses etc, and for this to be in full and final closure of the matter.

If you really want to keep the name, good luck!!

 

[badger]

You know, Ive just had a similar issue with a client of ours.

This guy sold a bunch of "products" via an ecommerce site and has the domain names of same. He then stopped selling these products directly and instead carried on selling them via another wholesaler. The TM holder then became very disgruntled and not only threatened various DRS claims but also wanted a substantial 5 figure sum for their hurt feelings / damages etc. My opinion was, of course, to tell them to get forked. However, the transferring of all the domains and £20k later our client is nursing his wounds.

And trust me, a prominent UK IP lawyer says he got off lightly. So do tread carefully friend, looks like you are on shaky ground. I would personally hand this one over.

 

[grantw]

My argument is that if the .co.uk was so important to them , then why didnt they reg the .co.uk at the same time.

This is no argument really, if they have rights in the name they have rights even if they chose not to register other extensions.

As most people have said, you seem to be in a weak position with this, you may want to think about damage limitation rather than risking a lost DRS strike against you and potential further action.

Grant

 

[Hennessy]

It seems to me that you registered the name with deliberate intent, be that to sell their product or a competitiors. The fact that you used the co.uk can be constrewed as passing off, esp. as you have prior knowledge of the content of the com.

The odds dont look favourable for you inho.

I'd get in touch with them and send them a 'without prejudice' letter, accepting no liability or acceptance of their claims and offer to sell the name for a nominal amoount say £200 to cover your admin expenses etc, and for this to be in full and final closure of the matter.

If you really want to keep the name, good luck!!

Thanks for all your replies.

I did as you suggested, and now through mediation are asking for a figure of around £3K to cover their costs/legal expenses or they will go the Expert and if they win will claim their costs/legal expenses PLUS damages.

Without being too hard on me, I'd welcome any constructive comments.

 

[bb99]

What has the mediator said about this - the DRS is meant to be a non-legal low cost alternative to legal action.

?

 

[Hennessy]

What has the mediator said about this - the DRS is meant to be a non-legal low cost alternative to legal action.

?

Well, as this is all new to me I have found it too be rather daunting and very frustrating. I accept that wrongs have been made and I have at all times corrected them as and when pointed out by the complainant before and during the mediation process. I suppose ignorance is not a good defence.

However, the mediator seems keen for a settlement to include legal costs to the complainant, and as i would rather limit my losses have gone along with that.

 

[retired_member12]

Thanks for all your replies.

I did as you suggested, and now through mediation are asking for a figure of around £3K to cover their costs/legal expenses or they will go the Expert and if they win will claim their costs/legal expenses PLUS damages.

Without being too hard on me, I'd welcome any constructive comments.

That advice from pendragon was very bad. I wish i'd read this thread earlier, asking for £200 is idiot territory. Now look what the reaction has been. Didn't any alarm bells go off in your head about asking them for cash? What about the damage long term to your business of getting into a spat with a potential supplier?

Look, it's their word, they made it up and TM'd it, you saw the .co.uk wasn't regged, so regged it, and sold their products there, plus yours, which i suspect are in a similar field. Whether these other products are actually yours, or are simply another companys' also in a similar field which you sell, you're a business person who knows what passing off is (or should do). You're going to lose this hands down, and its nieve in the extreem to seek advice about retaining it in light of what you've done.

It's not a crime that they forgot to register the .co.uk version you know. You saw an opportunity to capitalise, and it was a bad call. Offer to hand it over now to end the matter. If they don't agree, and they've already stumped up the money to the 'Expert', then you're in line for a 'teach him a lesson' episode i'm afraid. I'd rather have the DRS than legal costs, wouldn't you?

 

[grantw]

This thread should be stickied as a perfect example of why using/abusing TM domains is a very bad idea, particularly when solicitors/costs/damages become involved.

If you've been blatantly passing off (and that can potentially include competitors ads on a parked page) you have virtually no leg to stand on and they can hit you with crazy costs/damages if they feel like it and will probably get them.

A lot of domainers still seem to think the worst that might happen is a lost DRS or at best they'll sell it for £xxx as it's cheaper for the company than paying for the expert decision. Hopefully this issue and the post by badger might wake a few people up to what can and does happen!

The above isn't aimed directly at you Hennessy just me preaching my general message that still seems to go over lots of folks heads!

Grant